Court allows determination of whether “buttery” on Franzia boxes is infringement of JaM Cellars marks or descriptive to head to jury. Kudos to the Court for not rubber-stamping the parties’ requests to seal the record – thereby providing access to all.

Sometimes the USPTO doesn’t always catch when a business tries to trademark words that have significant meaning in an industry or are descriptive. After all, industries are vast and work-specific lexicons aren’t always published, nor do applicants always properly disclose when a mark has an industry specific or related meaning.

It looks like JaM Cellars was able to trademark versions of both JaMand Buttera few years back (but many many years after the use of the words “jammy” and “buttery” were already classical descriptors for wine) and has been involved in multiple suits against other wineries/wine groups regarding use of its marks, including a prior suit against the Wine Group (Franzia makers) that appears to have been dismissed by stipulation. And now that Franzia is using both Jammy and Buttery as descriptors, JaM is maintaining two separatesuits against Franzia maker, The Wine Group to get different versions of the packaging halted (left is JaM, right is Franzia):

Image from Complaint by JaM Cellars against The Wine Group (Franzia)

An order in one of the suits (over the use of “rich & buttery” on Franzia boxes) from Friday found that there were facts that a reasonable jury could look to in determining whether “rich & buttery” on the Franzia boxes was used as a descriptor or as a brand/name of wine – meaning that a jury should decide whether the use of the words amounts to “fair use” or is trademark infringement. The order denied Franzia’s summary judgment request on the matter.

A wine with buttery characteristics has been aged in oak and generally is rich and flat (less Acidity). A buttery wine often has a cream-like texture that hits the middle of your tongue almost like oil (or butter) and has a smooth finish.

JAMMY

Sommeliers and wine experts cringe when they hear this term while the rest of us delight. Jam is delicious and it is part of the PB&J experience. In wine, jammy indicates a wine with a cooked berry sweetness that is syrupy and often is used to describe American wines like zinfandel, grenache, cabernet franc and Australian shiraz…don’t be a hater.

In finding that a trier of fact should make the determination the Court’s notation about why a common term used to describe wine could be used as a mark the Court noted:

While it may appear obvious to a wine enthusiast that “butter” is commonly used to describe a trait of Chardonnay wine, nothing in the word inherently has anything to do with wine. As Plaintiff notes, the dictionary definition of butter points to (1) “a solid emulsion of fat globules, air, and water made by churning milk or cream and used as food;” (2) “a buttery substance,” defined further as “any of various fatty oils remaining nearly solid at ordinary temperatures” or “a creamy food spread;” and (3) flattery. See “Butter,” Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam-webster.com/dictionary/butter; see also Fortune Dynamic, Inc., 618 F.3d at 1033 (“A suitable starting place for attempting to draw the line between a suggestive and a descriptive mark is the dictionary.”) (internal quotations omitted). Thus, a jury could find that the mark is most appropriately categorized as suggestive, since it requires a consumer to create an association between BUTTER and wine. A suggestive mark is considered strong, so the existence of a triable issue of material fact as to this factor similarly weighs in favor of finding a triable issue of fact as to likelihood of confusion at this stage.

Additionally, the Court noted that it was not making a ruling and even reserved judgment noting that the case was problematic from the perspective of attempting to utilize and potentially monopolize descriptive terms.

The Court stresses that it is not making any findings of fact or conclusions of law at this stage. Further, the Court has not endeavored to identify every disputed issue of material fact: the factual issues discussed above are simply examples of why summary judgment is not appropriate here. … While the Court has some reason to be concerned based on this and other lawsuits that Plaintiff may be effectively attempting to monopolize use of the term “buttery” to describe Chardonnay, summary judgment is not warranted. It remains to be seen whether judgment as a matter of law may be appropriate at or after trial.

I want to point out that the Court also did an excellent job of not rubber-stamping the parties’ requests to seal their exhibits and denied requests based on an analysis of the record finding that the redactions and sealing requests were overly broad and didn’t fit with the spirit of the law – which is access.

So it looks like there’s a potential for a jury to decide how Franzia is using the mark – as a brand or name or simply in describing the characteristics of what’s in the box, and whether such a name can even infringe when the marks are derivative of industry accepted descriptors and the plaintiff could be found to be attempting to monopolize the terms.

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Ashley Brandt

Hi there! I’m happy you’re here. My name is Ashley Brandt and I’m an attorney in Chicago representing clients in the Food and Beverage, Advertising, Media, and Real Estate industries.
A while back I kept getting calls and questions from industry professionals and attorneys looking for advice and information on a fun and unique area of law that I’m lucky enough to practice in.
These calls represented a serious lack of, and need for, some answers, news, and information on the legal aspects of marketing and media.
I've got this deep seeded belief that information should be readily available and that the greatest benefit from the information age is open access to knowledge... so ... this blog seemed like the best way to accomplish that.
I enjoy being an attorney and it’s given me some amazing opportunities, wonderful experiences, and an appreciation and love for this work.
I live in Chicago and work at an exceptional law firm, Goldstein & McClintock, with some truly brilliant people.
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